Titanium Metals Corp. of America v. Banner

Rule of Law:

A patent claim for a composition of matter is anticipated under 35 U.S.C. § 102, and therefore not novel, if the composition was previously described in the prior art, even if the prior art did not disclose a newly discovered property of that composition recited in the claim.

Facts:

• Inventors Loren C. Covington and Howard R. Palmer, employees of Titanium Metals Corporation of America, developed a titanium-based alloy.
• The alloy contains small amounts of nickel (Ni) and molybdenum (Mo) to provide corrosion resistance in hot brine environments while retaining workability.
• The patent application claimed a composition with 0.6% to 0.9% nickel and 0.2% to 0.4% molybdenum.
• A 1970 Russian technical article investigated the mechanical properties of ternary Ti-Mo-Ni alloys.
• A data point in a graph within the Russian article described an alloy containing 0.75% nickel and 0.25% molybdenum.
• The Russian article disclosed the alloy's composition and certain mechanical properties, but did not mention its corrosion resistance in hot brine.

Procedural Posture:

• Titanium Metals Corporation of America (TMCA) filed a patent application for a titanium alloy.
• The Patent and Trademark Office (PTO) examiner rejected claims 1 and 2 as anticipated under 35 U.S.C. § 102 and claim 3 as obvious under § 103, based on a prior Russian technical article.
• TMCA appealed the examiner's final rejection to the PTO Board of Appeals.
• The PTO Board of Appeals affirmed the examiner's decision.
• TMCA, as plaintiff, filed a civil action in the U.S. District Court for the District of Columbia against the Commissioner of Patents and Trademarks to obtain the patent.
• The District Court (trial court) found in favor of TMCA and issued an order authorizing the Commissioner to grant the patent.
• The Commissioner of Patents and Trademarks, as appellant, appealed the District Court's decision to the U.S. Court of Appeals for the Federal Circuit.